Wednesday, October 24, 2012

Previous ITC decisions either cleared Android devices of violation of the asserted patents (Apple's three-patent complaint against Motorola) or identified a violation with respect to only one or two patents at a time. But on Wednesday, Administrative Law Judge Thomas B. Pender issued a preliminary ruling in Apple's favor against Samsung over four patents: one design patent, one hardware patent, and two multitouch software patents.

In its original complaint filed in July 2011, Apple had asserted five utility (technical) patents and two design patents. The case was streamlined in March through the withdrawal of one patent (and 15 claims of two other patents). Judge Pender's preliminary ruling does not find a violation with respect to two of the six remaining patents.

U.S. Patent No. 7,479,949 on a "touch screen device, method, and graphical user interface for determining commands by applying heuristics" (which Apple wanted to call "the Jobs patent" in a trial in Judge Posner's court that never took place)

The ITC has the authority to impose U.S. import bans, but the actual impact that such a ban can have on Samsung's U.S. business will depend on two key factors:

Judge Pender's holdings are now subject to a Commission review, which Samsung will surely request. The Commission is the six-member decision-making body at the top of the ITC and usually hands down a final ruling four months after the initial determination. It has previously overruled its ALJs in many cases, and sometimes to a large extent. Even Apple has experienced this before: in the summer of 2011 it won a preliminary ruling (from a different ALJ) against HTC over two patents, but ultimately only the less powerful one of the two was deemed violated. The Commission has recently remanded the investigations of Motorola Mobility's complaints against Apple and Microsoft.

The key issue as always are workarounds and designarounds. Import bans or injunctions don't apply to products that don't actually infringe the relevant intellectual property rights.

According to Judge Pender's initial determination (and a headline of a request for briefing that I discovered and blogged about in early September), Samsung has presented to the ITC modified versions of its products that work around the three utility patents found infringed. Details on those workarounds are not available yet, raising the question of whether they merely steer clear of infringement through substantial degradations of the user experience (in a worst-case scenario the removal of features) or preserve most of the user benefits of the claimed inventions while being on the legally safe side. More information will be available when the public redacted version of Judge Pender's initial determination is published, which will presumably take a couple of weeks (at least).

By presenting designaround products to the ITC during the original investigation, Samsung sought to eliminate or at least reduce the potential for enforcement disputes (such as the one in which Apple says HTC's current U.S. products still infringe on a patent in violation of an import ban ordered last December). If Samsung implements any designarounds cleared by the ITC, it's on the safe side and its products won't be seized at customs. If it ultimately implements designarounds that are not identical to the ones presented to the ITC, there can still be a dispute, but the fact that a designaround was cleared may increase the likelihood of clearance of future designarounds.

The initial determination doesn't mention a designaround for the D'678 patent, but design patent infringement can always be avoided.

This preliminary ruling provides further validation to Apple's long-standing claims that Android-based devices infringe its intellectual property, but it's too early to tell whether the U.S. import ban that Apple may win on this basis is going to constitute a tipping point in the dispute. As soon as more details surface on Samsung's designarounds (hopefully those won't be redacted too ehavily), I'll analyze them just like I discussed the workarounds Samsung claims to have developed for the three multitouch software patents a California jury found infringed two months ago.

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About Me

Florian Mueller is an app developer who used to be an award-winning intellectual property activist. His 30 years of software industry expertise span different market segments (games, education, productivity and infrastructure software), diverse business models, and technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof, except that he is long AAPL.) He is now developing games for smartphones and tablet computers.